Mohan Dewan and Disha Dewan of R K Dewan & Co report on the ban on any changes to patent specifications or claims at the time of national phase entry via the Patent Cooperation Treaty in India

It has been an unfortunate and misguided trend for sometime now for applicants to file (or be advised to file) a reduced number of claims at the time of national phase entry of Patent Cooperation Treaty (PCT) applications into India. This has been due to a number of reasons: (i) to amend claims to bring them in line with patentable subject matter in India; and (ii) to reduce fees payable due to a decreased number of claims and/or pages. While we have never condoned or followed this practice, the serious repercussions of it are now starkly visible in light of the recent order of the Indian Patent Office (IPO). And it’s time for the world to sit up and take notice.

India became a signatory to the PCT in 1995 and since then, the national phase entry international applications filed under this treaty has been permitted within 31 months. No extension of this time period is allowed. The specification must be filed in English and if the publication at the World IP Organization (WIPO) is in any other language, then the translation of this document has to be filed. This translation may be duly verified by the applicant or the applicant’s agent.

As far as the specification and claims are concerned, the Indian Patent Act and rules strictly require the applicant to file the specification as last published on the WIPO website. This may include amendments carried out in the claims under Article 19 or amendments carried out to the specification and the claims under Article 34, both of the PCT.

The Indian Patent Act and rules do not permit amendment of the specification, including the claims, at the time of national phase entry. Voluntary amendment of the specification or the claims by deleting some of the claims, especially some of the claims that are not considered patentable under the Indian Patent Act, is permitted at a later stage. Voluntary amendments to the body of the specification may also be desirable for introducing specific text, for example, the source and geographical origin of biological material used in the invention under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms, or an explanation of certain terms, or for introducing data to satisfy specific provisions of Indian law, such as the Section 3(d) requirement of efficacy.

In recent years, particularly after 2005, a practice had crept in by which applicants at the time of national phase entry into India have been filing a reduced number of claims. Two thousand and five is significant because amendments were made to the Indian Patent Act and rules by which the claims in the excess of 10 were chargeable.

It therefore became commercially attractive for applicants to reduce the number of claims at the time of national phase entry into India.

Furthermore, it was desirable, especially in the biotechnology, bioengineering, pharmaceutical, biomedical and other related fields, to remove reference to non-patentable subject matter from the claims and description. For example, a method of agriculture or horticulture is not patentable in India. Neither can one patent any process for the medicinal, surgical, curative, prophylactic (diagnostic, therapeutic) treatment of human beings or animals. It is also not possible to patent a new form of a known substance that does not result in the enhancement of the efficacy of that substance, or the mere discovery of any new property or new use of a known substance. Therefore, claims that come under the scope of such subject matter will by default be rejected by the IPO.

The IPO has four autonomous branch offices and the controllers and examiners at these offices generally work independently of each other. This issue of reduction of claims at the time of national phase entry was dealt with differently by the controllers and examiners. Many controllers were allowing such applications after calling on the applicants to make a request for amendment and pay for the excess fee, while others were ignoring the specification filed with the amended claims and examining the claims as last published by WIPO on its website.

A circular was issued in July 2012 by the controller general of patents in which the controller clarified that the practice of reducing claims was not in the accordance with the law and is not allowed. It is clear from the circular that there was no change in the law in 2012 but only a clarification. After the issuance of this circular, a few applicants went to the high courts seeking to strike down the provisions of the circular, but to date no order has been passed by any court against this clarification.

In an order issued by the Intellectual Property Appellate Board (IPAB) (order 17 of 2013), the board remanded an application that was refused by the controller, in which the applicant had reduced the number of claims, but the reason for this remand was that while refusing to accept the application, the controller had not given an opportunity to the applicant to be heard. This order has been interpreted to mean that the IPAB had ordered the controller to accept the amended claims, which was not really the case.

In a hard hitting judgement delivered on 30 July 2015 in the Ericsson case, concerning the patent 1722/KOLNP/2008, the controller of patents made it very clear that entry in the national phase in India with a reduced set of claims is not permissible. In this case, at the time of national entry, the applicant dropped three claims and introduced amendments to three claims. By dropping the three claims, the applicant filed the application by paying less fees (ie, no fees were paid for the dropped three claims). The controller held that by this action the applicant had committed an “illegality”. Also, he held that the time for payment of the fees had lapsed and by law this amounted to not paying the fees at all.

The controller has clarified further that if the applicant has in fact not paid adequate fees at the time of national phase entry, ie, he/she has not paid the excess claims and excess pages fees, such a defect cannot be corrected during examination. The result is that the application is deemed to be not filed at all at the IPTO as it was held in the Ericsson case, which resulted in complete loss of rights of the applicant.

In this decision, the controller has pointed out that the practice of filing a patent specification with reduced number of claims at the time of national phase entry, and therefore filing a specification that does not correspond to the specification in the PCT international application, is a ‘malpractice’ and a ‘surreptitious action’ on the part of the applicant and might even harm the interest of the public.

Applicants and their agents desiring to enter India under the PCT are therefore requested to be cautious and ensure that the specification and the claims, as well as all other bibliographic details of the application, strictly correspond to the specification, claims and detail that last appeared on the WIPO website.

Non-compliance may seriously jeopardise the rights of the applicant. Any amendment in claims, specifications or drawings must be carried out only after national phase entry by making a formal request on Form 13. In fact, we would strongly recommend that India be treated as a convention country and that in the case of biotechnology and pharmaceutical patents specifically, the convention route be chosen.

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